Meet the Presenters Daphne Lainson Ann McCrackin Partner; Smart & Biggar President; Black Hills IP dclainson@smart-biggar.ca amccrackin@blackhillsip.com
Market Comparisons & Considerations Country Population 326 Mil 1.38 Bil 126 Mil 51.2 Mil 35.9 Mil Economy #1 (GDP) #2 #3 #12 #10 GDP per Capita $57,500 8,100 39,000 27,500 43,200 Agriculture: 1% Agriculture: 9% Agriculture: 1% Agriculture: 2% Agriculture: 2% GDP by Sector Industry: 19% Industry: 40% Industry: 30% Industry: 39% Industry: 28% Services: 80% Services: 51% Services: 69% Services: 59% Services: 70%
Top 10 Canadian Technologies (By Patent Applications) 9.3% Computer technology 8.5% Digital communication 6.6% Civil engineering 5.8% Pharmaceuticals 4.7% Medical technology 4.3% Telecommunications 4.2% Other special machines 4% Electrical machinery, apparatus, energy 4% Transport 4% Measurement
Top Patent Assignees (by 2016 Grants) 800 700 600 500 400 300 200 100 0
Patent Filing (Non-Resident) 140,000 133,612 133,522 China 127,042 120,200 117,464 120,000 110,583 100,000 80,000 Japan 60,030 59,882 58,137 55,783 56,705 55,030 60,000 46,219 46,419 40,000 44,611 Korea 45,406 40,890 40,779 24,705 24,713 20,000 26,828 26,304 24,637 24,970 Canada 0 2011 2012 2013 2014 2015 2016
Patent Grants (Non-Resident) 120,000 China 102,072 95,880 100,000 73,297 80,000 70,548 64,153 59,766 60,000 51,508 49,874 49,392 Japan 42,609 42,444 40,729 40,000 32,492 31,663 29,406 25,554 Korea 26,475 22,462 20,000 23,129 19,343 Canada 19,415 21,077 20,765 18,612 0 2011 2012 2013 2014 2015 2016
Patents in Force 2,500,000 China 1,980,985 1,946,568 1,920,490 2,000,000 1,838,177 1,694,435 1,472,374 1,542,096 1,772,203 Japan 1,500,000 1,196,497 1,033,908 875,385 1,000,000 Korea 950,526 696,939 912,442 885,959 812,595 738,312 678,005 500,000 175,236 153,781 166,771 144,363 161,442 Canada 137,368 0 2011 2012 2013 2014 2015 2016
Lifetime Cost of a Patent $30,000 $25,000 $20,000 $11,282 $16,154 $15,648 $17,069 $15,000 $10,000 $14,214 $10,267 $5,000 $9,723 $7,198 $0 China Japan Korea Canada Patent Acquisition Annuities
Good News Stories from 2017 “Promise doctrine” struck down – Supreme Court of Canada finds that the doctrine “is not good law”: AstraZeneca v Apotex 2017 SCC 36 Federal Court awards largest monetary remedy in patent infringement case in Canadian history – Federal Court awards Dow Chemical $645 million (CDN) for infringement by Nova Chemical: Dow v. Nova 2017 FC 637 Pharmaceutical patentees gain new rights and relief – Supplementary protection to restore patent term lost due to regulatory delays – Revised patent linkage regulations that provide greater procedural alignment to US ANDA litigation
Why Canada? In comparison to the US: – Patent procurement: relatively cheap and fast – No post-grant opposition practice • Re-examination is ex parte and limited to a substantial new question of patentability – Patent litigation: relatively cheap and can be fast with effective relief • Trial within 2 years possible
Filing Entitlement before CIPO – Declaration of legal representative or declaration of entitlement in international phase • Inventor assignments are not required No excess claims fees – $300 issue fee increases by $6 per page in excess of 100 pages National phase entry – 30 months, but up to 42 months with late fee • Proposed new Rules: 42 month late entry, “due care” will be required Grace period for applicant derived public disclosures – One year from Canadian (PCT) filing date, NOT priority date
Major Steps in Prosecution Annual maintenance fees – Due on filing date anniversary, commencing with 2 nd anniversary Examination – Request due 5 years from (PCT) filing • Proposed Rules reduce to 3 years post filing Responding to an Examiner’s requisition – Typically 6 months (unless under a Special Order) • Proposed Rules reduce to 4 months Grant – Issue fee due 6 months from Notice of Allowance – Grant within about 6 weeks post fee payment
Amendment Practice Voluntary amendments – Generally available at any time up until allowance – U.S. style new matter standard • Amendments must be reasonaby inferable from the specification (description and claims) and/or drawings as originally filed, or admitted in the specification to form part of the prior art Amendments after allowance possible
Term 20 years from (PCT) filing – No patent term adjustment for CIPO delays – Up to 2-year Certificate of Supplementary Protection may be available for regulatory approval delays for new drugs
Possible Pitfalls During Prosecution • Double patenting • Statutory subject matter
Double Patenting Same invention and obviousness double patenting, without the benefit of a terminal disclaimer Problems arise with: – “Voluntary” divisionals • Pursue all subject matter in original application, subject to Canadian Examiner’s unity objection – Closely related applications filed on the same day • E.g., Application #1 claims composition of matter and Application #2 claims method of use – Collapse applications into a single application – Applications related through continuation (CIP) • Prosecute first filed application to grant before application based on US CIP
Statutory Subject Matter Broad definition of statutory subject matter in Patent Act invention means any new and useful art, process, machine, manufacture or composition of matter, or any new and useful improvement in any art, process, machine, manufacture or composition of matter Statutory exclusion “No patent shall be granted for any mere scientific principle or abstract theorem” Judicial exceptions – Mere “abstract ideas”, “professional skills and judgment” • Example: methods of medical treatment
Business Methods Amazon “one-click” patent found patent-eligible by Federal Court of Appeal in 2011 – Required “purposive construction” of patent claims as opposed to a parsing of elements (claim as a whole approach) • Purposive construction: some elements essential and some non-essential Post-Amazon, CIPO adopted a “problem-solution approach” to supplement purposive construction – Problem-solution cannot be merely an abstract idea or professional skills and judgement • E.g., if invention is a dosing regime requiring professional skills and judgement, then non- statutory
CIPO Practice CIPO should consider what features of a claim are essential to the invention – If a feature (e.g., a computer) is essential to an invention, then a computer-implemented invention should be patentable CIPO may require “physicality” (e.g., a computer), or a technical solution to a technical problem to demonstrate that the invention is more than an abstract idea, or professional skills and judgement – Diagnostics: if the problem is more than a data acquisition problem, or the solution is more than a disembodied data analysis without practical application, then the diagnostic should be patentable • E.g., CIPO may require a physical step of data acquisition that is an essential feature of the claim
Examination Timelines: CIPO Service Standards First substantive office action after Subsequent actions, post-response (90% request for examination made (90% of of applications) applications) Discipline Months Discipline Months Biotechnology 9 Biotechnology 17 Electrical 9 Electrical 18 Mechanical 5 Mechanical 16 Organic Chemistry 6 Organic Chemistry 15 General Chemistry 6 General Chemistry 18
Examination Timelines: Managing Grant Accelerating prosecution Buying more time – Request examination on filing/national – Defer requesting examination entry • Currently 5-years post (PCT) filing – Prompt action on all steps (responses, final – Proposed Rules change to 3-years post (PCT) filing fee payments) – Reply on or shortly before deadline – Special Order • 6-months normal time to reply • $500 government fee – Proposed Rules change: 4 months • Green technology – Abandonment/reinstatement – Patent Prosecution Highway • 1-year reinstatement as of right • Global PPH (25 Patent Offices, including – Proposed Rules change, “due care” for USPTO) reinstatement may apply • Bilateral agreements (EPO, Mexico, SIPO, Chile)
Highlights of Canadian Patent Litigation Pre-trial – More limited discovery than in U.S. – Fact/inventor/expert; one company representative – No forum shopping Trial – No juries – No Markman hearings Relief – Remedies include damages, equitable remedies of injunction and accounting of profits, and costs – No treble damages Standard of Proof (validity attacks) - Balance of probabilities; not clear and convincing evidence
Questions • Interested in learning more about Black Hills IP services? o Contact Jim Brophy at (612) 867-4018 or jbrophy@blackhillsip.com • Interested in learning more about the SLW Institute? o Contact Bryan Ness at (612) 371-2149 or bness@slwip.com
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